5/25/2010
by: Joseph Page
Topic Views: 1129

Provisional Patent Problems

Beware of these issues when using a provsional

Provisional Patent Problems

First off, what is a provisional patent application? When an inventor files for a patent, he is typically filing a ­non-provisional patent application. If all goes well, the non-provisional application goes through the USPTO filing system and eventually comes out as a patent.  The USPTO also allows inventors to file provisional applications. A provisional application is essentially a place holder that lasts for one year. The theory is that the inventor can file the provisional and use the intervening year to develop and market the invention. Many patent practitioners and inventors seem to like them because they are cheaper to create and theoretically give the inventor a year to try the invention out and see if it is marketable. The theory is that the inventor can later decide not to pursue unprofitable inventions and save the costs associated with preparing a more expensive non-provisional application. However, in my experience, the use of these applications can be extremely dangerous to the unwary inventor.
The first major problem with provisional applications is that, unlike non-provisionals, they cannot be revived if they are abandoned.  In my experience, inventors tend to file and forget.  They realize that they need to file a non-provisional next year sometime, but their attention gets diverted to other things. In about a year, they call up there patent attorney and tell him they want to file a non-provisional.  If they wait more than a year, to the day, then their application becomes abandoned automatically pursuant to 35 USC § 111(b)(5) and they lose all patent rights in that invention forever. Also, one must note that a good non-provisional typically takes a month or two to create. If the inventor calls the attorney shortly before the deadline, the attorney may not be able to prepare a solid patent application in time. Most attorneys also require rush fees for this kind of scenario.  Very often, an unwary inventor will either lose their rights or incur significant fees that could have been avoided if a non-provisional application had been filed in the first place.
The second major problem is that new matter cannot be added to a patent application because of 35 USC § 132.  If the inventor develops their invention further during the year given by the provisional, the updates can’t be added to a subsequent non-provisional application without filing an extra continuation-in-part application which further drives up costs and can create some potential litigation issues if the patent is ever enforced in court.  Also, the reason provisionals are cheaper than non-provisionals is that they can be thrown together quickly by the attorney.  This means that the attorney doesn’t spend much time talking with the inventor about the invention and may not put a lot of thought into the application. As a result, provisional applications may miss key points and run into the same new matter problems.

Finally, most applications spend several years at the USPTO before they issue as patents. If the provisional does what it is supposed to do, it merely adds an extra year before the inventor can get an enforceable patent. For all of these reasons, I do not like to use provisional patent applications in my practice. My concern is that the likelihood of causing harm to the inventor is significantly greater than any theoretical advantage that may be associated with them. This doesn’t mean that other patent practitioners are wrong for using them. It does, however, mean they should be used with care, if at all.
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